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BIG PHYSICS, BIG QUESTIONS –

‘Pruned’ patent sets precedent

By Andy Coghlan

THE highest court within the European Patent Office upheld a challenge to a ground-breaking biotechnology patent last week, severely restricting its scope. The EPO’s Technical Board of Appeal in Munich approved a final draft of the patent with 6 of the 44 original claims withdrawn. The patent, which applies to plants containing a gene that makes them resistant to a herbicide, will still cover the gene and the techniques needed to insert it into plant cells, but it will not cover the plants or the seeds from which they are grown.

Greenpeace, which challenged the patent, hailed the decision as a victory. But so too did Plant Genetic Systems of Ghent, Belgium, which owns the patent with Biogen of Cambridge, Massachusetts. The EPO upheld what PGS says were the most important claims in the patent.

The full implications of the ruling will not become clear until the board publishes details of its arguments later this month. Nevertheless, the consequences are likely to be profound. “It sets a precedent, so each and every application in the future will have to be analysed to see whether our ruling applies,” says Ursula Kinkeldey, chairwoman of the board.

The original patent, which was awarded in 1990, covered the technology for transferring a herbicide-resistance gene into the cells of a range of plants including potatoes, sugar beet and tomatoes. The companies also claimed commercial rights over the gene, the altered plants and the seed.

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“PGS wanted wide protection – from the plant cells, the seeds and the plants to future generations of plants,” says Anna Brindley, a biologist at Greenpeace’s science unit. “Now, it looks like they can’t charge royalties on the plants or the seeds.”

The European Patent Convention, which the EPO administers, does not allow patents on any invention that is “contrary to public morality”. It also forbids the patenting of plant or animal varieties. Greenpeace challenged the patent on the grounds that it is immoral to give control over genes and living organisms to a private company. It also argued that herbicide-resistant crops are immoral because farmers will be tempted to spray much more herbicide than usual, killing all vegetation except their crops. And it complained that “superweeds” might develop if they acquired the herbicide-resistance gene. On technical grounds, Greenpeace claimed that the patent should not stand because PGS was claiming rights over plant varieties, which are not patentable.

According to Kinkeldey, the patent is not contrary to public morality. But she says that Greenpeace’s arguments about plant varieties are correct. “We ruled that the plant varieties claimed are not patentable,” she says. “This doesn’t mean, however, that all other cases will be affected.”

PGS, meanwhile, says it is happy with the ruling because it voluntarily withdrew the six offending claims in the original patent. It also says that the remaining claims give it strong protection over the hybrid plants. “We have claims to the process for manipulating the plant cells and the inserted genes,” says Jan van Rompaey, manager of technology protection for the company. Anyone who wanted to sell plants that were resistant to the herbicide would still have to use the company’s gene and its technology for inserting the gene. Selling seed from one year’s crop to be sown the next year is not a realistic option because the plants from these second-generation seeds are vastly inferior to those sold by PGS, the company says.

Jan Leemans, director of R&D for PGS, says that as far as the company is concerned, the case is closed. He hopes that the first product using the technology, a variety of herbicide-resistant rape, will go on sale later this year in Canada.

Renée Vellvé, programme director of Genetic Resources Action International, a pressure group that lobbies on biodiversity issues, thinks the ruling has serious implications for industry. “If the EPO is finally saying that plants can’t be patented because they’re varieties, the door is closed to patenting plants,” she says.